FEDERAL COURT OF AUSTRALIA Live Earth Resource Management Pty Ltd v Live Earth LLC [2007] FCA 1034 Live Earth Resource Management Pty Ltd v Live Earth LLC NSD 1227 of 2007 STONE J 6 July 2007 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NSD1227 OF 2007 LIVE EARTH RESOURCE MANAGEMENT PTY LTD Applicant LIVE EARTH LLC First Respondent CASBAH PRODUCTIONS LLC d/b/a CONTROL ROOM LLC Second Respondent VIRGIN BOOKS LTD Third Respondent JUDGE: STONE J DATE OF ORDER: 6 JULY 2007 WHERE MADE: SYDNEY THE COURT ORDERS THAT: (1) The application for interlocutory relief be dismissed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NSD 1227 OF 2007 LIVE EARTH RESOURCE MANAGEMENT PTY LTD Applicant LIVE EARTH LLC First Respondent CASBAH PRODUCTIONS LLC d/b/a CONTROL ROOM llc Second Respondent VIRGIN BOOKS LTD Third Respondent JUDGE: STONE J DATE: 6 July 2007 PLACE: SYDNEY REASONS FOR JUDGMENT 1 On Saturday 7 July 2007, a concert is to be held at the Aussie Stadium in Sydney. The concert is the first in a series of live music concerts planned to take place over a 24 hour period in eight cities around the world. The concerts are to be covered by local television and radio networks as well as on the internet. According to the respondents their primary purpose is to raise international awareness of climate change and to inspire people to take an active role in combating global warming. They are expected to reach an audience of over 2 billion people. In advertising the concerts the respondents have made use of a logo (the "O" logo), that comprises the words "Live Earth" in conjunction with a round disc that is said to be representative of a music compact disc through which there is a view of the sky. The logo has a number of forms many of which include the words "The Concerts for a Climate in Crisis" and also the international morse code representation of the "SOS" call being dot dot dot, dash dash dash, dot dot dot. I understand that this is intended to refer to the "SOS campaign" and stands for "Save Our Selves". 2 The first respondent, assisted by the second respondent, is responsible for the organisation and promotion of the concerts including the Sydney concert. As part of this exercise the first respondent has entered into contracts for the merchandising of souvenir goods to be sold at the Sydney concert. The goods include T-shirts, caps and bags, all of which bear some form of the "O" logo. The third respondent is a book publisher and intends to publish a book, entitled The Live Earth Global Warming Survival Handbook, in Australia in September. The Handbook's subtitle is "77 Essential Skills to Stop Climate Change – or Live Through It". The introduction warns of the reality of global warming and climate change and urges individuals to take their share of "small steps - around the house, around the office, in your neighbourhood" to combat this trend. It contains practical advice and hints presented in a light-hearted and humorous manner and directed at a domestic rather than a commercial or industrial market. The Handbook has already been published in the United Kingdom and in the United States of America by other publishers. 3 There was no appearance by the third respondent, Virgin Books Limited, despite the attempts of the applicant's solicitors to serve it in accordance with orders made by the duty judge, Emmett J, when this matter was commenced on 2 July 2007. His Honour ordered that the third respondent could be served with the application, statement of claim, notice of motion and supporting affidavits by facsimile to a specified number in the United Kingdom. His Honour further ordered that, for the purposes of the application for interlocutory relief, those documents be taken to have been served upon their transmission to that facsimile number. 4 The facsimile number was apparently obtained following an internet search by the applicant's solicitors. On 28 June 2007, the applicant's solicitors transmitted a letter of demand addressed to Virgin Books Limited to that number. On 29 June 2007, Mr Charles Boundy, Group Legal Director for the Random House Group responded to that letter, indicating that Virgin Books Limited now formed part of the Random House Group, and disputing the basis for the interim orders foreshadowed in the applicant's letter. 5 Following Emmett J's order of 2 July 2007, Mr Leonard Mancini, solicitor for the applicant, sent two facsimile transmissions including the relevant documents to Mr Boundy, at a facsimile number different from that specified by Emmett J. The transmission reports indicate that these transmissions were successful. It is Mr Mancini's evidence that he also sent a facsimile comprising the application, statement of claim, notice of motion and the short minutes of order as made by Emmett J to the number specified by his Honour, and that the transmission report indicated that the transmission had been successful. Further attempts to transmit to this number were not successful. It is Mr Mancini's evidence that he made multiple, but unsuccessful, attempts to transmit additional documents to the number specified in Emmett J's order, and made further successful transmissions to Mr Boundy. Nevertheless, by facsimile dated 4 July 2007, Mr Boundy indicated that, although he had been made aware of these proceedings, "neither Virgin Books nor this office is in receipt of notice of any such proceedings". Given the urgency of the matter, however, I am satisfied that for present purposes the third respondent has been adequately notified, if not formally served. 6 The applicant, Live Earth Resource Management Pty Ltd, is a small Western Australian business which advertises that its "primary aim is to provide innovative, environmentally focussed products and services to industry, marine entities, government and other consumers with particular emphasis on pollution management, safety and structural enhancement." It markets a number of products, including those designed to control oil spills, non-slip paint, environmentally friendly paint and varnish remover, and concrete waterproofing products. The first and second respondents' primary focus is the production and co-ordination of the Live Earth concerts and goods associated with their promotion, such as recordings of musical performances from the concerts and promotional clothing. 7 The applicant is a joint registered owner of trade mark No 1050620 in classes 25 (clothing and footwear), 35 (retail and wholesale of environmental and pollution control products), and 42 (provision of advisory services on environmental and pollution management matters). It is a composite trade mark consisting of the words "Live Earth" on either side of a globe of the earth. 8 The first respondent's logo is not registered as a trade mark, although it has made an application for registration of the logo as a trade mark in categories 9, 16, 18, 21, 25 and 41. Both the applicant's trade mark and the first respondent's logo use a circular device however the shading and texture of applicant's mark make clear that it is intended to represent a spherical object whereas the respondent's logo has a flat disc-like appearance. 9 The applicant claims that the respondents have breached and are intending to breach its registered trade mark. Pending the final determination of their claims, it seeks the interlocutory orders to restrain the respondents from: 1. Selling or distributing or authorising others to sell and distribute, in Australia, T-shirts or other items of clothing bearing the first respondent's logo or any sign that is substantially identical with or deceptively similar to the applicant's trade mark; 2. Publishing the Handbook in Australia or selling or distributing it in Australia or authorising others to do so; 3. Using any form of the first respondent's logo on any printed publication in Australia or in any website specifically intended to be downloaded in Australia or directed or targeted at Australian audiences which offers advice on environmental and/or pollution management matters. 10 Over the course of the hearing the applicant moderated its demands in response to some of the implications of these orders raised by the respondents and in an attempt to show that, on the balance of convenience, the orders should be made. Mr Franklin SC, who appeared for the applicant, stressed that it did so recognising the real restrictions attending applications for interlocutory relief and without any concession that the activities it did not seek to restrain were legitimate. In particular the applicant confirmed that it did not wish to prevent the concert proceeding, and that it did not seek to restrain advice about environmental management being given at the concert, or the transmission at the concert of website material that might offend order 3, were it to be made. The applicant suggested that any order concerning use of the logo on websites should be expressed to take effect up to one week after the concert. These were practical and sensible responses to the circumstances in which the application was brought and the urgency with which the application was heard by the Court. 11 In Australian Broadcasting Corporation v O'Neill (2006) 229 ALR 457, the High Court has recently affirmed that in Australia, the principles relevant to the grant of an interlocutory injunction are those laid down in Beecham Group Limited v Bristol Laboratories Pty Limited (1968) 118 CLR 618 at 622-3 where the Court said that in dealing with applications for interlocutory injunctions it addresses itself to two main inquiries: The first is whether the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief … The second inquiry is … whether the inconvenience or injury which the plaintiff would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury which the defendant would suffer if an injunction were granted. 12 In O'Neill Gummow and Hayne JJ (with whom Gleeson CJ and Crennan J in their separate joint judgment agreed) quoted this comment and, at 478, added the following explanation: By using the phrase "prima facie case", their Honours did not mean that the plaintiff must show that it is more probable than not that at the trial the plaintiff will succeed; it is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial. 13 Their Honours also referred to the additional comment in Beecham to the effect that the strength of the prima facie case required depends on the nature of the rights asserted by the applicant for relief and the practical consequences likely to flow from the order the applicant seeks. This latter comment illustrates that the two enquiries referred to by the Court in Beecham are interlinked so that the weight of considerations in regard to one may well affect the other. 14 There are significant differences between the applicant's trade mark and the first respondent's logo (in its various forms) however the prominent use by both of the words, "Live Earth" leads me to conclude that the applicant has made out a prima facie case as that term is used in ABC v O'Neill. In my view it is not a strong case but it may well be that with more consideration than I have been able to bring to bear in the time available that the applicant might succeed in its claim for infringement of its rights as registered owner of the trade mark. 15 That brings me to the question of balance of convenience. In Beecham the Court quoted with approval comments made by Brett JA in Plimpton v Spiller (1876) 4 ChD 286 at 292-293 including the observation that whatever the decision in relation to interlocutory relief, There will be a hardship on the one side or on the other, and the question is, on which side does the balance appear to lie? 16 In this case the activities of the applicant and the respondents are worlds apart. I have listened at length to persuasive arguments by counsel to the effect that this difference weighs in favour of their respective clients' positions. Mr Franklin SC submitted for the applicant that association with the activities of the respondents would detract from the serious nature of his client's business and would trivialise it. He went so far as to say that the association would entirely deprive the registered trade mark of all its value. For the first and second respondents, Mr Gray SC submitted that the Live Earth Concerts and the immense publicity that has surrounded them would benefit the applicant. He pointed out that the concerts were a one-off event and argued that once they were over the high recognition of the "Live Earth" name would raise the applicant's business profile. 17 These different conclusions as to the consequences of the concerts going ahead indicate the difficulty of deciding where the balance in this case lies. Ultimately, however, I am not convinced that the applicant will suffer any damage that could not be compensated for by an award of damages or an account of profits. I am satisfied that the orders that the applicant seeks would detract from the effectiveness of the respondents' activities in a way that would be difficult to quantify and probably impossible to compensate by any monetary relief. The concerts, the sale of promotional merchandise and the Handbook all combine to convey the message that the respondents wish to convey in a manner that is more than the sum of the individual parts. For this reason I do not believe that it would be appropriate to restrain the respondents by the grant of relief that the applicant seeks. I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stone. Associate: Dated: 9 July 2007 Counsel for the Applicant: A Franklin SC Solicitor for the Applicant: Maxwell IP Counsel for the First and Second Respondents: P Gray SC with J Thornton Solicitor for the First and Second Respondents: McInnes Wilson Lawyers Counsel for the Third Respondent: The Third Respondent did not appear Date of Hearing: 5 and 6 July 2007 Date of Judgment: 6 July 2007